M/S Metglas Inc. Vs the Registrar of Trademarks & Anr.

“Direct the Respondent No. 1 to update their records to reflect the name of the Petitioner as the current proprietor of the mark ‘METGLAS’ [Trade Mark No. 357961 Class 6] in accordance with the Order No. 689/PR/2007 dated 02 February 2007,”

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:0 6.11.2025 17:02:14

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W.P.(C)-IPD 55/2025

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FACTUAL BACKGROUND

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It is the case of the Petitioner that the Mark ‘METGLAS’ in Class 6 registered with Respondent No. 1 vide certificate of registration dated 29.01.1980 by one Allied Chemical Corporation, after a series of changes in proprietorship, was assigned to the Petitioner by virtue of Deed of Assignment dated 25.08.2003. It is the Petitioner’s case that Form TM-24 dated 09.06.2004 was filed seeking to record the change of the proprietor’s name to the Petitioner, which was allowed vide Order No. 689/PR/2007 dated 02.02.2007, stating that the entry was to be made in the Trade Marks Register and the changes to be notified in the Trade Marks Journal. However, Respondent No. 1 has not updated its records to reflect the Petitioner as the proprietor of the Mark ‘METGLAS’ despite Order No. 689/PR/2007 dated 02.02.2007.

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SUBMISSIONS ON BEHALF OF THE PETITIONER:

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The learned Counsel for the Petitioner submitted that the Petitioner was assigned the Mark ‘METGLAS’ in Class 6 by Respondent No. 2 vide Deed of Assignment dated 25.08.2003 and that the Petitioner and the previous proprietors from 1999 have filed the relevant forms with the requisite fees seeking to update the records of Respondent No. 1.

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The learned Counsel for the Petitioner while explaining the chain of events and the filings of Form TM-16, Form TM-24 and Form TM-33 submitted that the Petitioner holds the Mark ‘METGLAS’, which was registered with Respondent No. 1 vide certificate of registration dated 29.01.1980 by an entity named Allied Chemical Corporation. On 05.11.1981, Form TM-16 was filed seeking to record the change of the

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Signature Not Verified

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Signed By:NEELAM W.P.(C)-IPD 55/2025 SHARMA Signing Da te:0 6.11.2025 17:02:14

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proprietor’s name from Allied Chemical Corporation to Allied Corporation. After the merger of Allied Corporation with Allied-Signal Inc, Form TM-24 was filed on 05.05.1999 seeking to record the change of the proprietor’s name to Allied-Signal Inc. Form TM-33 was also filed on 05.05.1999 seeking to record the change of the proprietor’s name from Allied-Signal Inc. to AlliedSignal Inc. and later Form TM-33 was filed on 04.01.2001 seeking to record the change of the proprietor’s name to Respondent No. 2.

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The learned Counsel for the Petitioner submitted that after assignment of the Mark ‘METGLAS’ to the Petitioner by Respondent No. 2 vide Deed of Assignment dated 25.08.2003, Form TM-24 was filed on 09.06.2004 seeking to record the change of the proprietor’s name to the Petitioner. The learned Counsel for the Petitioner submitted that Form TM-24 filed on 09.06.2004 has already been allowed by Respondent No. 1 vide Order No. 689/PR/2007 dated 02.02.2007 stating that ‘ entry is to be made in the Trade Marks Register, the said changes to be notified in the Trade Marks Journal in due course ’.

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The learned Counsel for the Petitioner submitted that the action to be taken by Respondent No. 1 on Order No. 689/PR/2007 dated 02.02.2007 is purely procedural, however the change of the proprietor’s name for the Mark ‘METGLAS’ has not been updated in the records of Respondent No. 1 for last 18 years.

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The learned Counsel for the Petitioner further submitted that the Mark ‘METGLAS’ was renewed by the Petitioner, and a renewal certificate was also issued on 25.08.2017 certifying that the Mark ‘METGLAS’ was renewed for a period of 10 years i.e., 29.01.2028. The learned Counsel for

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:0 6.11.2025 17:02:14

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W.P.(C)-IPD 55/2025

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the Petitioner submitted that no objection was raised by Respondent No. 1 with respect to any discrepancy in the application presented by the Petitioner for renewal of the registration of the Mark ‘METGLAS’.

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The learned Counsel for the Petitioner submitted that the Respondent No. 1’s failure and the unwarranted delay in updating the name of the current proprietor in the records of Respondent No. 1 continues to adversely affect the rights and interests of the Petitioner. 11. The learned Counsel for the Petitioner further relied on the decision in the case of M/s Tiger Food Ingredients (P) Ltd. v. The Registrar of Trade Marks, order dated 05.09.2024 passed by the Madras High Court in W.P.(IPD) No. 23 of 2024, wherein it is held that:

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“The certificate of incorporation pursuant to change of name indicates that the present name of the petitioner is Tiger Food Ingredients Private Limited. Pursuant to such change of name, the petitioner filed an application in Form TM P in respect of Trade Mark Nos.1198575, 4457411, 5614405 and 5603076. Once such application is filed, it is incumbent on the respondent to consider the same within a reasonable time. The contention of Mr.S.Janarthanam, learned SPC, that the petitioner rushed to Court without waiting for a reasonable time is not devoid of merit. Nonetheless, by taking into account the nature of the application, it is just and necessary that such application be considered and disposed of expeditiously.”

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Accordingly, the Petitioner has prayed for direction to Respondent No. 1 to update its records to reflect the name of the Petitioner as the current proprietor of the Mark ‘METGLAS’ in accordance with Order No. 689/PR/2007 dated 02.02.2007.

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Signature Not Verified

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Signed By:NEELAM W.P.(C)-IPD 55/2025 SHARMA Signing Da te:0 6.11.2025 17:02:14

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SUBMISSIONS ON BEHALF OF RESPONDENT NO. 1:

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Vide orders dated 12.09.2025 and 26.09.2025, the learned CGSC was directed to take instructions with regard to the prayers sought in the Petition. 14. The learned CGSC for Respondent No. 1 submitted that he has received the instructions and the stand of Respondent No. 1, which are as below:

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14.1 Form TM-24 dated 09.06.2004 was filed on behalf of the Petitioner, and upon such filing, a query was raised by Respondent No. 1 seeking clarification regarding how Respondent No. 2 had assigned the Mark ‘METGLAS’ to the Petitioner, when, as per the records of Respondent No. 1, the proprietor on record is Allied Chemical Corporation.

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14.2 As per the records available with Respondent No. 1, Form TM33 dated 04.07.2005 was filed by an entity named Allied Chemical Corporation. Accordingly, the records of Respondent No. 1 continue to reflect the name of Allied Chemical Corporation as the proprietor of the Mark ‘METGLAS’.

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14.3 No document has been filed thereafter by the Petitioner, and therefore, Respondent No. 1 has acted on the basis of the existing records available with Respondent No. 1.

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14.4 As regards the allowance of the renewal request filed by the Petitioner in the year 2017, the processing of renewal requests is automated and carried out through the computer systems of Respondent No. 1.

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In view of the above, the learned CGSC for Respondent No. 1

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Signature Not Verified

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Signed By:NEELAM W.P.(C)-IPD 55/2025 SHARMA Signing Da te:0 6.11.2025 17:02:14

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submitted that this Court may pass appropriate directions considering the above submissions.

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ANALYSIS AND FINDINGS:

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The material placed on record shows that the Petitioner has made requisite filings before Respondent No. 1 to record the changes in proprietorship of the Mark ‘METGLAS’. The assignment of the Mark ‘METGLAS’ from Respondent No. 2 to the Petitioner was duly effected by a Deed of Assignment dated 25.08.2003, followed by filing of Form TM-24 on 09.06.2004.

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After the filing of Form TM-24 dated 09.06.2004 by the Petitioner seeking to record the assignment of the Mark ‘METGLAS’, Respondent No. 1 raised a query seeking clarification as to how Respondent No. 2 had assigned the Mark to the Petitioner when, as per the records of Respondent No. 1, the proprietor on record continued to be Allied Chemical Corporation.

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In response, the Agent, vide clarification letter dated 14.09.2004, had stated that the appropriate forms had been filed for recordal of various changes in the name of the proprietor, namely: (a) Allied Chemical Corporation changed its name to Allied Corporation; (b) Allied Corporation merged with and into Allied-Signal Inc., whereby the subsisting entity became Allied-Signal Inc.; (c) Allied-Signal Inc. subsequently changed its name to AlliedSignal Inc.; and (d) AlliedSignal Inc. thereafter changed its name to that of Respondent No. 2. The Agent further submitted, in support thereof, Form TM-33 dated 04.01.2001, seeking to record the change of the proprietor’s name from AlliedSignal Inc. to Respondent No. 2, in order to

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Signature Not Verified

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Signed By:NEELAM SHARMA Signing Da te:0 6.11.2025 17:02:14

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W.P.(C)-IPD 55/2025

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address the query raised by Respondent No. 1 as to how Respondent No. 2 had assigned the Mark ‘METGLAS’ to the Petitioner when the proprietor on record was Allied Chemical Corporation.

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The subsequent applications under Forms TM-33, TM-24 and TM-50 filed by the Petitioner’s Agent were also considered and allowed vide Order No. 689/PR/2007 dated 02.02.2007. Despite the passing of the Order No. 689/PR/2007 dated 02.02.2007, Respondent No. 1 is yet to carry out consequential change in the Register of Trade Marks for updating the records to reflect the Petitioner as the proprietor of the Mark ‘METGLAS’. 20. The Register of Trade Marks reflects the previous proprietor’s name contrary to Order No. 689/PR/2007 dated 02.02.2007 passed by Respondent No. 1 allowing the request of the Petitioner. Accordingly, the Register of Trade Marks is required to be updated to give proper effect to Order No. 689/PR/2007 dated 02.02.2007.

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Accordingly, the records of Respondent No. 1 should accurately reflect the Petitioner’s proprietorship in accordance with the Deed of Assignment dated 25.08.2003 and Order No. 689/PR/2007 dated 02.02.2007 passed by Respondent No. 1.

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In view of the above, the present Petition is allowed. Respondent No. 1 is directed to update its records to reflect the name of the Petitioner, i.e., M/s METGLAS, Inc. as the registered proprietor of the Mark ‘METGLAS’ registered vide Registration No. 357961 in Class 6 in the Register of Trade Marks.

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